WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Logica Plc, Logica UK and Logica SA v. Société Logica SARL
Case No. DBIZ2002-00104
1. The Parties
The Complainants are Logica Plc and Logica UK, both companies incorporated in England with registered office and principal place of business at Stephenson House, 75 Hampstead Road, London NW1 2PL, United Kingdom, and Logica SA with registered office at 8, rue de Citeaux, 75012 Paris, France.
The Respondent is Société Logica SARL, with principal place of business at 845, rue de la Basse Côte, Armancourt 60880, France.
2. The Domain Name and Registrar
The disputed domain name is <logica.biz>.
The registrar of the disputed domain name is Nordnet, Chateau de la Bonnerie, 111, rue de Croix, 59510 Hem, France.
3. Procedural History
Complainants initiated this proceeding under the Start-Up Trademark Opposition Policy for .biz ("STOP") by filing a complaint received by the WIPO Arbitration and Mediation Center (the "Center") via e-mail on April 26, 2002, and in hardcopy on April 30, 2002. The Center then verified that the complaint complied with the Rules for Start-Up Trademark Opposition Policy ("STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .biz ("Supplemental STOP Rules"). Complainants paid the requisite filing fees.
On May 31, 2002, the Center transmitted notification of the complaint and commencement of the proceeding to Respondent by courier, facsimile and e-mail, and advised Respondent that the deadline for transmission of a response was June 20, 2002.
On June 26, 2002, Complainants filed a request for suspension of the administrative proceeding. On July 2, 2002, the Center notified the parties of the suspension of the administrative proceeding until August 1, 2002. Complainants filed a request for a further suspension on August 1, 2002. The Center notified the parties of the extension of the suspension until September 1, 2002. Upon Complainantsí request filed on August 30, 2002, the Center reinstated the proceedings on September 3, 2002.
Following receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence from this panelist, on September 11, 2002, the Center appointed the undersigned sole panelist as the Administrative Panel in this matter and notified the parties of the appointment.
4. Factual Background
Complainant 1, Logica plc, is the registered proprietor of a number of trademark registrations for the word mark "LOGICA" in a number of different countries including the UK (e.g. registration no. 1216089 with filing date of April 3, 1984) and France (e.g. registration no. 1246978 with filing date of September 20, 1983).
The .biz Registration Agreement incorporates the STOP and STOP Rules (adopted by NeuLevel, Inc. and approved by ICANN). In registering the disputed domain name with the registrar, Respondent accepted the .biz Registration Agreement and consented to being bound by the STOP and STOP Rules. The STOP and STOP Rules provide for the resolution of disputes by a designated dispute resolution service provider, of which the Center is one. This Panel is appointed by the Center to decide the complaint under the STOP and STOP Rules.
5. Partiesí Contentions
Complainants state that Complainant 1, Logica plc, carries on business specializing in information technology consultancy, software development, systems integration and training and maintenance for such systems. Complainant 3, Logica SA was incorporated in France on December 31, 1979. Complainants claim that by reason of the very extensive use of the name and mark LOGICA in the UK, in France and worldwide, the Complainants have built up and own a significant reputation and goodwill in this mark.
Complainants allege that they became aware of the existence of the Respondent on April 6, 2002, after receiving an e-mail from "firstname.lastname@example.org" confirming that the disputed domain name matching the Complainantsí IP claim no. 87065 had been registered to Respondent.
Complainants allege that Respondent is not a part of Complainantsí group of companies and has no rights or legitimate interests in the disputed domain name. Complainants filed an investigation report showing that Respondent was incorporated in 1984, is in the business of automation and industrial computer programming and currently employs 10 people (Annex 7 to the Complaint).
Respondent did not reply to Complainantsí contentions.
6. Discussion and Findings
The Center transmitted notification of the complaint and the complaint by courier, fax and e-mail to Respondent at the addresses set out in its registration of the disputed domain name. The e-mail transmission is shown to have been undertaken successfully, and there is no indication in the file that the courier delivery was not successfully delivered. The Panel finds that the Center took the steps prescribed by paragraph 2(a) of the STOP Rules for communicating with Respondent. Paragraph 2(e) of the STOP Rules provides that when communication has been undertaken in accordance with paragraph 2(a), such communication "shall be deemed to have been made". The Panel finds that Respondent had notice of this proceeding within the meaning of the STOP Rules.
To establish the right to the transfer of a name from a respondent, a complainant under the STOP must demonstrate pursuant to paragraph 4(a):
(i) The disputed domain name is identical to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The disputed domain name has been registered or is being used in bad faith.
The Complainant must prove that each of these three elements is present.
Complainants have submitted evidence of several registrations of the trademark "LOGICA" in France and in the UK. Respondent has not challenged the presumption of Complainantsí rights in the mark based on registration. Every letter in the disputed domain name and the "LOGICA" mark being the same, the Panel determines that the disputed domain name is identical to the "LOGICA" trademarks.
Paragraph 4(c) of the STOP provides that "any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [Respondentís] rights or legitimate interests for purposes of paragraph 4(a)(ii)":
(i) Respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name; or
(ii) Before any notice to respondent of the dispute, its use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(iii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights.
The investigation report filed by Complainants (Exhibit 7 to the Complaint) shows that Respondent "has been trading under the name Logica since June 22, 1984" by offering automation and industrial computer programming services. The printout of Respondentís website posted under <logica-automatisme.com> (Exhibit 6 to the Complaint) also shows that Respondent offers automation applications and computer numeric control services and equipment and lists a number of representative clients.
Therefore, it clearly appears that, before any notice of the dispute, Respondent has used the name "Logica" which corresponds to the disputed domain name in connection with a bona fide offering of goods or services for approximately 18 years.
This panel, therefore, finds that Complainants have not shown that Respondent has no rights or legitimate interests in the disputed domain name.
Therefore, it is not necessary to discuss and decide whether Respondent registered or used the disputed domain in bad faith.
The Panel determines that Complainants have not proven that Respondent has no rights or legitimate interests in the disputed domain name within the meaning of Paragraph 4 (a)(ii) of the STOP Rules.
The Complaint is dismissed.
Dated: September 18, 2002